WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Siemens AG v. Domains By Proxy, LLC / Rod Siemens
Case No. D2018-1538
1. The Parties
The Complainant is Siemens AG of Munich, Germany, represented by Müller Fottner Steinecke, Germany.
The Respondent is Domains By Proxy, LLC of Scottsdale, Arizona, United States of America ("US") / Rod Siemens of Prospect Heights, Illinois, US, self-represented.
2. The Domain Name and Registrar
The disputed domain name <siemensconsulting.com> (the "Disputed Domain Name") is registered with GoDaddy.com, LLC (the "Registrar").
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on July 10, 2018. On July 10, 2018, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Disputed Domain Name. On July 10, 2018, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the Disputed Domain Name which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on July 11, 2018, providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint. The Complainant filed an amended Complaint on July 12, 2018.
The Center verified that the Complaint together with the amended Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the "Policy" or "UDRP"), the Rules for Uniform Domain Name Dispute Resolution Policy (the "Rules"), and the WIPO Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (the "Supplemental Rules").
In accordance with the Rules, paragraphs 2 and 4, the Center formally notified the Respondent of the Complaint, and the proceedings commenced on July 13, 2018. In accordance with the Rules, paragraph 5, the due date for Response was August 2, 2018. On July 23, 2018, the Respondent requested an extension of time for filing the Response. In accordance with the Rules, paragraph 5(b), the Respondent was granted an automatic four calendar day extension for the Response, and the due date for the Response was set to August 6, 2018. The Response was filed with the Center on August 5, 2018.
The Center appointed Nick J. Gardner as the sole panelist in this matter on August 14, 2018. The Panel finds that it was properly constituted. The Panel has submitted the Statement of Acceptance and Declaration of Impartiality and Independence, as required by the Center to ensure compliance with the Rules, paragraph 7.
On August 23, 2018 the Panel issued a Procedural Order which required the Respondent to produce evidence such as a certified or notarized copy of his birth certificate corroborating his claim that "Siemens" was his birth name. The Order also allowed the Complainant to comment upon any such material provided by the Respondent. The Respondent submitted material on August 24, 2018 and this material and the Complainant's comments on it (received on August 31, 2018) are discussed below. A further communication was received from the Respondent on September 2, 2018.
4. Factual Background
The Complainant is an electrical engineering and electronics company with operations in many countries. It is one of the largest such companies in the world and is extremely well known. Since there is no dispute that this is the case the Panel does not consider it necessary to go into further detail in this regard. The Complainant is the owner of numerous international trademark registrations for the word SIEMENS including for example international registration no. 637074 for SIEMENS, registered on March 31, 1995 and designating more than 60 jurisdictions worldwide including the US. These trademarks are referred to in this decision as the SIEMENS trademark. The Complainant has registered multiple domain names, including <siemens.com> and others such as <siemens-home.com>, that it uses in connection with its official websites where it provides information about itself and its products.
The Disputed Domain Name was registered on July 31, 2010. It does not resolve to any active website.
Details as to the Respondent appear below.
5. Parties' Contentions
The Complainant says the Disputed Domain Name is confusingly similar to the Complainant's SIEMENS trademark. The Disputed Domain Name contains that trademark, followed by the descriptive word "consulting" and the generic Top-Level Domain ("gTLD") ".com".
The Complainant says that the Respondent has no rights or legitimate interests in respect of the Disputed Domain Name. The Respondent is not and has never been one of the Complainant's representatives, employees or one of its licensees nor otherwise authorized to use the SIEMENS trademark. The Complainant does not have any connection with the Respondent. The Respondent is not using the Disputed Domain Name in connection with a bona fide offering of goods or services. The Respondent has not been commonly known with the Disputed Domain Name.
When the Registrar revealed the identity of the Respondent the Complainant filed an amended Complaint. In this it alleged that it was to be assumed that the Respondent's specified family name "Siemens" was false and pointed to the email address disclosed - "[…]@comcast.net".
The Complainant says that the Disputed Domain Name was registered and is being used in bad faith. The Respondent knew or should have known about the Complainant's earlier rights in the SIEMENS trademark. In deliberately registering the Disputed Domain Name, the Respondent intended to use the strong worldwide reputation of the Complainant's SIEMENS trademark in order to confuse the public and to cause damage to the Complainant by disrupting its business. It says that the Disputed Domain Name "was selected by the Respondent with intent to attract the Internet users for illegitimate purposes and to cause damage to the Complainant".
The Respondent also relies upon historical records obtained from "archive.org" which it says show that the Disputed Domain Name has never been linked to an active website but has in the past been offered for sale. The Complainant says that the passive holding of the Disputed Domain Name is itself indicative of bad faith registration and use.
The Respondent is an individual. He says that "Siemens" is his birth name and that "Siemens Consulting is a privately owned company created in 2010 by Rod and Mary Ellen Siemens and registered with the State of Illinois (USA) as a Limited Liability Company (LLC) and issued a permanent company identification number by the United States Federal Government. Siemens Consulting offers professional consulting services in and around the Chicago, IL (USA) area. At that same the company was created, the domain name of Siemens Consulting was reserved (as shown by Claimant) in order to obtain the email address of "@siemensconsulting.com" and to reserve the domain space for a webpage to be developed at the appropriate time."
The Respondent says that the Disputed Domain Name has never been linked to a website as he has never created a website for his business, but he uses the Disputed Domain Name for email and has done so since shortly after it was registered.
The Respondent denies the Disputed Domain Name has ever been offered for sale and says the Complainant's evidence in this regard has been produced by an automated proxy that has nothing to do with him.
The evidence that the Respondent has produced in support of his case is discussed below.
The Respondent denies that the Disputed Domain Name is confusingly similar to the Complainant's trademark.
The Respondent says that the Complainant's conduct in bringing this Complaint is oppressive and bullying.
6. Discussion and Findings
The Panel notes this is a case where one of the named Respondents (Domains By Proxy, LLC) appears to be a privacy or proxy registration service. It disclosed details of contact details given by the Respondent when registering the Disputed Domain Name. The Panel in this case adopts the approach of most UDRP panels, as outlined in WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition ("WIPO Overview 3.0") at Section 4.4.5, as follows:
In all cases involving a privacy or proxy service and irrespective of the disclosure of any underlying registrant, the appointed panel retains discretion to determine the respondent against which the case should proceed.
Depending on the facts and circumstances of a particular case, e.g., where a timely disclosure is made, and there is no indication of a relationship beyond the provision of privacy or proxy registration services, a panel may find it appropriate to apply its discretion to record only the underlying registrant as the named respondent. On the other hand, e.g., where there is no clear disclosure, or there is some indication that the privacy or proxy provider is somehow related to the underlying registrant or use of the particular domain name, a panel may find it appropriate to record both the privacy or proxy service and any nominally underlying registrant as the named respondent."
In the present case the Panel finds the substantive Respondent to be Rod Siemens – and references to the Respondent should be understood as being to that person.
To succeed, in accordance with paragraph 4(a) of the Policy, the Complainant must satisfy the Panel that:
(i) the Disputed Domain Name is identical with or confusingly similar to a trademark or service mark in which the Complainant has rights;
(ii) the Respondent has no rights or legitimate interests in respect of the Disputed Domain Name; and
(iii) the Disputed Domain Name has been registered and is being used in bad faith.
A. Identical or Confusingly Similar
The Panel finds that the Complainant has rights in the SIEMENS trademark. The Disputed Domain Name is confusingly similar to this trademark involving simply adding the descriptive word "consulting" to the trademark. Previous UDRP panels have consistently held that domain names are identical or confusingly similar to a trademark for purposes of the Policy, "when the domain name includes the trademark, or a confusingly similar approximation, regardless of the other terms in the domain name" (Wal-Mart Stores, Inc. v. Richard MacLeod d/b/a For Sale, WIPO Case No. D2000-0662). It is established that, where a mark is the distinctive part of a disputed domain name, the disputed domain name is considered to be confusingly similar to the registered mark (DHL Operations B.V. v. DHL Packers, WIPO Case No. D2008-1694).
It is also established that the addition of a descriptive term (such as here the word "consulting") has little, if any, effect on a determination of legal identity between the domain name and the mark (Quixtar Investments, Inc. v. Dennis Hoffman, WIPO Case No. D2000-0253); furthermore, mere addition of a generic or descriptive term does not exclude the confusing similarity (PRL USA Holdings, Inc. v. Spiral Matrix, WIPO Case No. D2006-0189).
Accordingly the Panel finds that the Disputed Domain Name is confusingly similar to the Complainant's trademark. Therefore, the first condition of paragraph 4(a) of the Policy has been fulfilled.
B. Rights or Legitimate Interests
Paragraph 4(c) of the Policy provides a list of circumstances any of which is sufficient to demonstrate that the Respondent has rights or legitimate interests in the Disputed Domain Name:
(i) before any notice to the Respondent of the dispute, the Respondent's use of, or demonstrable preparations to use, the Disputed Domain Name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or
(ii) the Respondent has been commonly known by the Disputed Domain Name, even if the Respondent has acquired no trademark or service mark rights; or
(iii) the Respondent is making a legitimate noncommercial or fair use of the Disputed Domain Name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.
The Complainant has not authorised, licensed, or permitted the Respondent to register or use the Disputed Domain Name or to use the SIEMENS trademark. The Complainant has prior rights in the SIEMENS trademark which precede the Respondent's registration of the Disputed Domain Name. The Complainant has therefore established a prima facie case that the Respondent has no rights or legitimate interests in the Disputed Domain Name and thereby the burden of production shifts to the Respondent to produce evidence demonstrating rights or legitimate interests in respect of the Disputed Domain Name (see for example, Do The Hustle, LLC v. Tropic Web, WIPO Case No. D2000-0624; Croatia Airlines d.d. v. Modern Empire Internet Ltd., WIPO Case No. D2003-0455).
The Respondent says that (i) above applies. It is not entirely clear to the Panel but he may also be suggesting that (ii) above applies. He says that "Siemens" is his birth name and the name of his consulting business combines his birth name with the word "consulting". The corroborating evidence the Respondent has produced in support of his case is as follows:
a) A copy of a birth certificate issued on June 27, 1961 by the State of Montana dated and recording the birth on June 20, 1961 of Rodney McCarty Siemens (these names are listed as "First", "Middle", "Last" which is relevant for reasons discussed below).
b) Correspondence from the Ohio revenue service dated August 26, 2011 assigning to Siemens Consulting LLC an employer identification number.
c) Certification (the date of which is unclear) showing Rod Siemens is a certified safety coach and his wife Mary Siemens is a certified trainer.
d) Screenshots from the website of the Illinois Office of State which appear to show the existence of Siemens Consulting LLC as a corporate entity although these are poor quality and hard to read and any relevant dates are illegible.
e) An undated copy of a blank cheque issued by an Illinois bank showing the account holder to be Siemens Consulting LLC.
f) An electronic disclosure statement issued by Siemens Consulting LLC. It is not clear to the Panel exactly what his document is or why it was issued.
g) A blank but dated invoice dated August 3, 2018, in the name of Siemens Consulting LLC.
Most of the above material also contains a specific address in Illinois for Siemens Consulting LLC which corresponds to the Respondent's address.
The above material is not particularly well presented and is rather disorganized. However the Respondent is not represented and the Panel sees no reason to doubt its veracity. In the Panel's view it clearly confirms that the Respondent's last or family name is "Siemens" and that in 2011 he established a business called Siemens Consulting LLC. So far as the Panel can tell on the evidence submitted, this business would seem to be some sort of corporate vehicle for consultancy services offered by the Respondent and his wife which appear to be some form of safety and personal development consultancy. There is nothing before the Panel to suggest this is anything other than a family business.
The Panel also sees no reason to doubt the Respondent's account that he has used the Disputed Domain Name in connection with email addresses for his business and has not at least as yet established a website for his business.
In reaching this conclusion it is necessary to consider the Panel's Procedural Order (above) which required the Respondent to provide evidence of his claim that "Siemens" was his birth name, such as a certified or notarised copy of his birth certificate. Pursuant to this order the Respondent provided item (a) above which, as the Complainant correctly points out, is simply a scanned copy and not certified or notarised in any way.
The Panel regards the Respondent's failure to provide a notarised or certified copy of the birth certificate as unfortunate1. However the document that has been provided looks, as a matter of visual observation, to be genuine – it appears to be a copy of a well worn document, bearing a mixture of fonts, stamps, handwritten notes and so on. Further, although the Complainant observes that it is not a certified or notarised copy it does not seek to suggest that the document is not genuine. In the circumstances the Panel accepts the document as corroborating the Respondent's case that "Siemens" is his birth name.
The further observation the Complainant makes about this document is to suggest that it shows the Respondent's birth name to be "McCarty Siemens" rather than "Siemens". The Panel regards that argument as entirely without merit – the certificate clearly shows that "McCarty" is the Respondent's middle name rather than part of his last name.
The Panel attaches no significance to the fact that when he registered the Disputed Domain Name the Respondent used an email address of "[…]@comcast.net". There are any number of reasons why the Respondent may have used an email address in this format and it does not come close to establishing that "Siemens" is not his birth name.
In these circumstances the Panel concludes that the Respondent has established that before any notice of this dispute, he has used the Disputed Domain Name in connection with a bona fide offering of goods or services. In the light of this finding the Panel does not need to conclude whether or not the Respondent has also been commonly known by the Disputed Domain Name. The Complainant has therefore failed to establish that the Respondent lacks a legitimate right or interest in the Disputed Domain Name and the second condition of paragraph 4(a) of the Policy has not been fulfilled.
The Panel would also add the following observations. The burden of proof lies with the Complainant. Given the evidence the Respondent has produced to support his case (above) the Panel considers the Complainant has failed to discharge that burden. It is not clear to the Panel whether the Complainant continues to maintain that the Respondent's birth name is not Siemens and/or he has not used the Disputed Domain Name in connection with a bona fide business. The Complainant's comments in respect of the birth certificate filed by the Respondent (see above) seem to the Panel to be rather equivocal in this respect. If this does remain the Complainant's case that is not a case which is suitable for determination under the Policy – it is better suited to a forum which provides mechanisms for dealing with disputed evidence such as discovery, oral evidence on oath and cross examination.
C. Registered and Used in Bad Faith
Whilst the Panel's finding under (B) above is sufficient to enable a conclusion to be reached in relation to this Complaint, the Panel also finds that there is no evidence to suggest that the Disputed Domain Name has been registered and used in bad faith. The Respondent does not deny knowing of the Complainant when he registered the Disputed Domain Name and the Panel considers it likely that he would have been aware that his name was the same as that of one of the world's largest electronics companies. However that does not preclude him from using his own name as part of his business name providing he does so bona-fide in connection with a genuine business and is not seeking to trade off or exploit the Complainant's reputation. There are clear limits to the rights to use one's own name in this respect – see Peter Frampton v. Frampton Enterprises, Inc., WIPO Case No. D2002-0141 for a discussion of the relevant principles. However in the present case there is no evidence that the Respondent has in any way sought to capitalize on the Complainant's fame or improperly associate his business with that of the Complainant. All he has done is use his own name as part of the Disputed Domain Name which has been used for email in connection with what, on the evidence, is a bona fide business where there is no evidence at all that this business has in any way sought to take advantage of, or exploit the Complainant's fame and reputation. Indeed as the Respondent points out had it been his intention to take advantage of the Complainant's fame in some way it is likely that he would have linked the Disputed Domain Name to a website seeking to further such an intention. He has not done so.
So far as the alleged offer to sell the Disputed Domain Name is concerned the Panel accepts the Respondent's account that this "offer" was generated by an automated holding page in circumstances where the Disputed Domain Name was not linked to an active webpage, and was nothing to do with him. Further this "offer" appears to have only occurred on an isolated occasion during the eight years the Respondent has owned the Disputed Domain Name.
Accordingly the Panel concludes there is no credible evidence to establish bad faith on the part of the Respondent and the Complainant has failed to establish that the third condition of paragraph 4(a) of the Policy has been fulfilled.
D. Reverse Domain Name Hijacking
Several circumstances of this case have led the Panel to consider whether the filing of the Complaint constitutes "using the Policy in bad faith to attempt to deprive a registered domain name holder of a domain name" – see the Rules, paragraph 1, definition of Reverse Domain Name Hijacking ("RDNH"). Paragraph 15(e) of the Rules provides that if after considering the submissions the panel finds that the complaint was brought in bad faith, for example in an attempt at RDNH, or was brought primarily to harass the domain name holder, the panel shall declare in its decision that the complaint was brought in bad faith and constitutes an abuse of the administrative proceeding. The Rules, paragraph 15(e), call for this analysis even when the respondent has not expressly requested a finding of abuse – see Timbermate Products Pty Ltd v. Domains by Proxy, LLC / Barry Gork, WIPO Case No. D2013-1603. In the present case although the Respondent has not in terms asked for such a determination he has complained about the Complainant's conduct in bringing this Complaint which he describes as unfair and oppressive which is a further reason why the Panel considers it should address the issue.
The Panel on balance declines to make a finding of RDNH. It does so because it considers that the Complainant cannot reasonably have known the true position when it brought the Complaint. The Respondent is entirely entitled to shield his identity with a privacy service, and is also under no obligation to link the Disputed Domain Name to an active webpage. However these factors are not typically associated with a domain name being used by a bona fide business and put the Complainant in the position of being unable to readily ascertain the true position, or to communicate with the Respondent, before bringing this Complaint. Accordingly the Panel does not consider the Complaint was brought improperly.
Arguably the Complainant might have chosen to withdraw the Complaint once the true position was revealed but the Respondent's evidence is rather confusing and poorly presented and as originally filed did not include corroborating evidence that "Siemens" was the Respondent's birth name. Further when requested the Respondent filed only an ordinary copy of his birth certificate rather than the certified or notarized copy requested by the Panel. In these circumstances the Panel considers the Complainant should not be censured by way of an RDNH finding.
For the foregoing reasons, the Complaint is denied. The Panel declines to find that the Complaint was brought in bad faith.
Nick J. Gardner
Date: September 3, 2018
1 By a further communication of September 2, 2018 the Respondent indicated that the certificate he had supplied was the original certificate which he said by definition is certified and registered in Montana. He also offered to provide a notarized copy if the Panel would grant a three week extension. In fact what the Respondent has provided to the Center in electronic form is by definition a copy of the original certificate. The point of obtaining a certified or notarized copy is so that an independent identifiable third party, such as attorney or notary, can confirm he has seen the original document and that the copy provided corresponds to the original. This has not been done. However in view of the Panel's conclusion (see above) the Panel does not consider it necessary to introduce further delay to allow this to happen.